Response to Office Action

PRIME MATTER

KOCH Media GmbH

Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 09/30/2020)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 90067340
LAW OFFICE ASSIGNED LAW OFFICE 110
MARK SECTION
MARK mark
LITERAL ELEMENT PRIME MATTER
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (009) (current)
INTERNATIONAL CLASS 009
DESCRIPTION
games software; recorded data files; downloadable computer games; computer programs for video and computer games; computer games programmes downloaded via the internet; video games and computer games in the form of computer programs recorded on data carriers; software programs for video games; computer software for the administration of on-line games and gaming; computer game software for use with on-line interactive games; downloadable electronic game programs; media content; downloadable multimedia files; interactive databases; electronic databases; electronic databases recorded on computer media; downloadable information relating to games and gaming; augmented reality game software; pre-recorded compact discs featuring games
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 018275401
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
        FOREIGN FILING DATE 07/21/2020
GOODS AND/OR SERVICES SECTION (009) (proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
games software; Downloadable games software; recorded data files; recorded electronic data files featuring source code for video and computer games; downloadable computer games; downloadable computer game programs for video and computer games; computer programs for video and computer games; video games and computer games in the form of computer programs prerecorded on data carriers; computer games programmes downloaded via the internet; downloadable software programs for video games; video games and computer games in the form of computer programs recorded on data carriers; downloadable computer software for the administration of on-line games and gaming; software programs for video games; downloadable computer game software for use with on-line interactive games; computer software for the administration of on-line games and gaming; downloadable electronic game programs; computer game software for use with on-line interactive games; media content, namely, videos and still images from video and computer games; downloadable multimedia files, namely, audio files, video recordings, and multimedia files featuring video and computer games; media content; downloadable interactive databases in the field of video and computer game statistics; downloadable multimedia files; electronic databases in the field of source code for video and computer games recorded on computer media; interactive databases; downloadable computer software featuring information relating to games and gaming; electronic databases; downloadable augmented reality game software; electronic databases recorded on computer media; pre-recorded compact discs featuring games; downloadable information relating to games and gaming; augmented reality game software
FINAL DESCRIPTION
Downloadable games software; recorded electronic data files featuring source code for video and computer games; downloadable computer game programs for video and computer games; video games and computer games in the form of computer programs prerecorded on data carriers; downloadable software programs for video games; downloadable computer software for the administration of on-line games and gaming; downloadable computer game software for use with on-line interactive games; downloadable electronic game programs; media content, namely, videos and still images from video and computer games; downloadable multimedia files, namely, audio files, video recordings, and multimedia files featuring video and computer games; downloadable interactive databases in the field of video and computer game statistics; electronic databases in the field of source code for video and computer games recorded on computer media; downloadable computer software featuring information relating to games and gaming; downloadable augmented reality game software; pre-recorded compact discs featuring games
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 018275401
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
       FOREIGN FILING DATE 07/21/2020
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
DELETED FILING BASIS 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 018275401
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
European Union Trademark - EUTM
       FOREIGN REGISTRATION
       DATE
11/03/2020
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU0-38111352-155030323_. _S00.Prime_Matter_certifi ed_copy_of_registration_E UIPO_201120.pdf
       CONVERTED PDF FILE(S)
       (10 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0002.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0003.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0004.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0005.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0006.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0007.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0008.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0009.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0010.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0011.JPG
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
GOODS AND/OR SERVICES SECTION (016) (current)
INTERNATIONAL CLASS 016
DESCRIPTION
strategy guide books for computer games; computer game instruction manuals; magazines featuring video and computer games; printed matter; bulletins; packaging materials; printed packaging materials of paper; printed brochures; booklets relating to games
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 018275401
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
        FOREIGN FILING DATE 07/21/2020
GOODS AND/OR SERVICES SECTION (016) (proposed)
INTERNATIONAL CLASS 016
TRACKED TEXT DESCRIPTION
Strategy guide books for computer games; computer game instruction manuals; printed computer game instruction manuals; magazines featuring video and computer games; printed matter; printed matter, namely, books, printed periodicals, and printed instructional material on computer and video games; bulletins; bulletins concerning computer and video games; packaging materials; packaging materials made of recycled paper; printed packaging materials of paper; printed brochures; printed brochures featuring information on computer and video games; booklets relating to games
FINAL DESCRIPTION
Strategy guide books for computer games; printed computer game instruction manuals; magazines featuring video and computer games; printed matter, namely, books, printed periodicals, and printed instructional material on computer and video games; bulletins concerning computer and video games; packaging materials made of recycled paper; printed packaging materials of paper; printed brochures featuring information on computer and video games; booklets relating to games
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 018275401
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
       FOREIGN FILING DATE 07/21/2020
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
DELETED FILING BASIS 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 018275401
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
European Union Trademark - EUTM
       FOREIGN REGISTRATION
       DATE
11/03/2020
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU1-38111352-155030323_. _S00.Prime_Matter_certifi ed_copy_of_registration_E UIPO_201120.pdf
       CONVERTED PDF FILE(S)
       (10 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0012.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0013.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0014.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0015.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0016.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0017.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0018.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0019.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0020.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0021.JPG
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
GOODS AND/OR SERVICES SECTION (028) (current)
INTERNATIONAL CLASS 028
DESCRIPTION
electronic games; electronic targets for game; games relating to fictional characters; games adapted for use with television receivers; electronic games other than those adapted for use with television receivers only; video game apparatus; computer game apparatus; toys
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 018275401
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
        FOREIGN FILING DATE 07/21/2020
GOODS AND/OR SERVICES SECTION (028) (proposed)
INTERNATIONAL CLASS 028
TRACKED TEXT DESCRIPTION
electronic games; Electronic game playing apparatus for computer and video games; electronic targets for game; electronic targets for games; games relating to fictional characters; games relating to fictional characters, namely, video and computer games; games adapted for use with television receivers; electronic games other than those adapted for use with television receivers only; video game apparatus; video game apparatus, namely, video game consoles; computer game apparatus; computer game apparatus namely, video game consoles; toys; toys, namely, plush toys, toy action figures, water toys, and infant toys
FINAL DESCRIPTION
Electronic game playing apparatus for computer and video games; electronic targets for games; games relating to fictional characters, namely, video and computer games; games adapted for use with television receivers; electronic games other than those adapted for use with television receivers only; video game apparatus, namely, video game consoles; computer game apparatus namely, video game consoles; toys, namely, plush toys, toy action figures, water toys, and infant toys
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 018275401
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
       FOREIGN FILING DATE 07/21/2020
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
DELETED FILING BASIS 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 018275401
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
European Union Trademark - EUTM
       FOREIGN REGISTRATION
       DATE
11/03/2020
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU2-38111352-155030323_. _S00.Prime_Matter_certifi ed_copy_of_registration_E UIPO_201120.pdf
       CONVERTED PDF FILE(S)
       (10 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0022.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0023.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0024.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0025.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0026.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0027.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0028.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0029.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0030.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0031.JPG
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
GOODS AND/OR SERVICES SECTION (041) (current)
INTERNATIONAL CLASS 041
DESCRIPTION
provision of on-line computer games; providing on-line interactive computer games; entertainment services for matching users with computer games; electronic games services, including provision of computer games on-line or by means of a global computer network; providing interactive multi-player computer games via the internet and electronic communication networks; video game entertainment services; rental of video games; non-downloadable internet games; on-line gaming services; game services provided online from a computer network; providing games; electronic game services provided by means of the internet; electronic games services; electronic games services provided by means of a global communication network
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 018275401
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
        FOREIGN FILING DATE 07/21/2020
GOODS AND/OR SERVICES SECTION (041) (proposed)
INTERNATIONAL CLASS 041
TRACKED TEXT DESCRIPTION
provision of on-line computer games; Entertainment services, namely, provision of on-line computer games; providing on-line interactive computer games; entertainment services, namely, providing on-line interactive computer games; entertainment services for matching users with computer games; entertainment services, namely, providing a website featuring information for matching users with computer games; electronic games services, including provision of computer games on-line or by means of a global computer network; electronic games services, namely, provision of computer games on-line or by means of a global computer network; providing interactive multi-player computer games via the internet and electronic communication networks; video game entertainment services; providing online video game entertainment services; rental of video games; non-downloadable internet games; providing a website featuring non-downloadable internet games; on-line gaming services; game services provided online from a computer network; providing online computer game services; providing games; providing games, namely, online electronic games; electronic game services provided by means of the internet; electronic games services; electronic games services provided by means of a global communication network
FINAL DESCRIPTION
Entertainment services, namely, provision of on-line computer games; entertainment services, namely, providing on-line interactive computer games; entertainment services, namely, providing a website featuring information for matching users with computer games; electronic games services, namely, provision of computer games on-line or by means of a global computer network; providing interactive multi-player computer games via the internet and electronic communication networks; providing online video game entertainment services; rental of video games; providing a website featuring non-downloadable internet games; on-line gaming services; providing online computer game services; providing games, namely, online electronic games; electronic game services provided by means of the internet
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 018275401
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
       FOREIGN FILING DATE 07/21/2020
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
DELETED FILING BASIS 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 018275401
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
European Union Trademark - EUTM
       FOREIGN REGISTRATION
       DATE
11/03/2020
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU3-38111352-155030323_. _S00.Prime_Matter_certifi ed_copy_of_registration_E UIPO_201120.pdf
       CONVERTED PDF FILE(S)
       (10 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0032.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0033.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0034.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0035.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0036.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0037.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0038.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0039.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0040.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\900\673\90067340\xml4\ ROA0041.JPG
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
ADDITIONAL STATEMENTS SECTION
MISCELLANEOUS STATEMENT Upon acceptance of Applicant's § 44(e) filing basis based on the foreign registration certificate submitted with the present Response, Applicant requests that its § 1(b) intent-to-use filing basis be deleted from the application.
CORRESPONDENCE INFORMATION (current)
NAME DOUGLAS R. WOLF
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE drwtrademarks@wolfgreenfield.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
DOCKET/REFERENCE NUMBER K06162001600
CORRESPONDENCE INFORMATION (proposed)
NAME Douglas R. Wolf
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE drwtrademarks@wolfgreenfield.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
DOCKET/REFERENCE NUMBER K06162001600
SIGNATURE SECTION
DECLARATION SIGNATURE The undersigned has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. The undersigned acknowledges that the USPTO may, upon later review, require a signed declaration.
RESPONSE SIGNATURE /drw/
SIGNATORY'S NAME Douglas R. Wolf
SIGNATORY'S POSITION Attorney of Record
SIGNATORY'S PHONE NUMBER 67-646-8000
DATE SIGNED 11/23/2020
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Mon Nov 23 17:06:46 ET 2020
TEAS STAMP USPTO/ROA-XX.XXX.XX.X-202
01123170646670368-9006734
0-7502fb5a183ac8a8379fb6b
e857e9e9aaae53e9bf97c2f26
309e2bca4bb5e7-N/A-N/A-20
201123155030323856



Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 09/30/2020)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 90067340 PRIME MATTER(Standard Characters, see http://uspto.report/TM/90067340/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for games software; recorded data files; downloadable computer games; computer programs for video and computer games; computer games programmes downloaded via the internet; video games and computer games in the form of computer programs recorded on data carriers; software programs for video games; computer software for the administration of on-line games and gaming; computer game software for use with on-line interactive games; downloadable electronic game programs; media content; downloadable multimedia files; interactive databases; electronic databases; electronic databases recorded on computer media; downloadable information relating to games and gaming; augmented reality game software; pre-recorded compact discs featuring games
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018275401 filed 07/21/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: games software; Downloadable games software; recorded data files; recorded electronic data files featuring source code for video and computer games; downloadable computer games; downloadable computer game programs for video and computer games; computer programs for video and computer games; video games and computer games in the form of computer programs prerecorded on data carriers; computer games programmes downloaded via the internet; downloadable software programs for video games; video games and computer games in the form of computer programs recorded on data carriers; downloadable computer software for the administration of on-line games and gaming; software programs for video games; downloadable computer game software for use with on-line interactive games; computer software for the administration of on-line games and gaming; downloadable electronic game programs; computer game software for use with on-line interactive games; media content, namely, videos and still images from video and computer games; downloadable multimedia files, namely, audio files, video recordings, and multimedia files featuring video and computer games; media content; downloadable interactive databases in the field of video and computer game statistics; downloadable multimedia files; electronic databases in the field of source code for video and computer games recorded on computer media; interactive databases; downloadable computer software featuring information relating to games and gaming; electronic databases; downloadable augmented reality game software; electronic databases recorded on computer media; pre-recorded compact discs featuring games; downloadable information relating to games and gaming; augmented reality game softwareClass 009 for Downloadable games software; recorded electronic data files featuring source code for video and computer games; downloadable computer game programs for video and computer games; video games and computer games in the form of computer programs prerecorded on data carriers; downloadable software programs for video games; downloadable computer software for the administration of on-line games and gaming; downloadable computer game software for use with on-line interactive games; downloadable electronic game programs; media content, namely, videos and still images from video and computer games; downloadable multimedia files, namely, audio files, video recordings, and multimedia files featuring video and computer games; downloadable interactive databases in the field of video and computer game statistics; electronic databases in the field of source code for video and computer games recorded on computer media; downloadable computer software featuring information relating to games and gaming; downloadable augmented reality game software; pre-recorded compact discs featuring games
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018275401 filed 07/21/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018275401 registered 11/03/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-38111352-155030323_. _S00.Prime_Matter_certifi ed_copy_of_registration_E UIPO_201120.pdf
Converted PDF file(s) ( 10 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7Foreign Registration-8Foreign Registration-9Foreign Registration-10

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 016 for strategy guide books for computer games; computer game instruction manuals; magazines featuring video and computer games; printed matter; bulletins; packaging materials; printed packaging materials of paper; printed brochures; booklets relating to games
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018275401 filed 07/21/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Strategy guide books for computer games; computer game instruction manuals; printed computer game instruction manuals; magazines featuring video and computer games; printed matter; printed matter, namely, books, printed periodicals, and printed instructional material on computer and video games; bulletins; bulletins concerning computer and video games; packaging materials; packaging materials made of recycled paper; printed packaging materials of paper; printed brochures; printed brochures featuring information on computer and video games; booklets relating to gamesClass 016 for Strategy guide books for computer games; printed computer game instruction manuals; magazines featuring video and computer games; printed matter, namely, books, printed periodicals, and printed instructional material on computer and video games; bulletins concerning computer and video games; packaging materials made of recycled paper; printed packaging materials of paper; printed brochures featuring information on computer and video games; booklets relating to games
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018275401 filed 07/21/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018275401 registered 11/03/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-38111352-155030323_. _S00.Prime_Matter_certifi ed_copy_of_registration_E UIPO_201120.pdf
Converted PDF file(s) ( 10 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7Foreign Registration-8Foreign Registration-9Foreign Registration-10

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 028 for electronic games; electronic targets for game; games relating to fictional characters; games adapted for use with television receivers; electronic games other than those adapted for use with television receivers only; video game apparatus; computer game apparatus; toys
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018275401 filed 07/21/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: electronic games; Electronic game playing apparatus for computer and video games; electronic targets for game; electronic targets for games; games relating to fictional characters; games relating to fictional characters, namely, video and computer games; games adapted for use with television receivers; electronic games other than those adapted for use with television receivers only; video game apparatus; video game apparatus, namely, video game consoles; computer game apparatus; computer game apparatus namely, video game consoles; toys; toys, namely, plush toys, toy action figures, water toys, and infant toysClass 028 for Electronic game playing apparatus for computer and video games; electronic targets for games; games relating to fictional characters, namely, video and computer games; games adapted for use with television receivers; electronic games other than those adapted for use with television receivers only; video game apparatus, namely, video game consoles; computer game apparatus namely, video game consoles; toys, namely, plush toys, toy action figures, water toys, and infant toys
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018275401 filed 07/21/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018275401 registered 11/03/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-38111352-155030323_. _S00.Prime_Matter_certifi ed_copy_of_registration_E UIPO_201120.pdf
Converted PDF file(s) ( 10 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7Foreign Registration-8Foreign Registration-9Foreign Registration-10

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 041 for provision of on-line computer games; providing on-line interactive computer games; entertainment services for matching users with computer games; electronic games services, including provision of computer games on-line or by means of a global computer network; providing interactive multi-player computer games via the internet and electronic communication networks; video game entertainment services; rental of video games; non-downloadable internet games; on-line gaming services; game services provided online from a computer network; providing games; electronic game services provided by means of the internet; electronic games services; electronic games services provided by means of a global communication network
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018275401 filed 07/21/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: provision of on-line computer games; Entertainment services, namely, provision of on-line computer games; providing on-line interactive computer games; entertainment services, namely, providing on-line interactive computer games; entertainment services for matching users with computer games; entertainment services, namely, providing a website featuring information for matching users with computer games; electronic games services, including provision of computer games on-line or by means of a global computer network; electronic games services, namely, provision of computer games on-line or by means of a global computer network; providing interactive multi-player computer games via the internet and electronic communication networks; video game entertainment services; providing online video game entertainment services; rental of video games; non-downloadable internet games; providing a website featuring non-downloadable internet games; on-line gaming services; game services provided online from a computer network; providing online computer game services; providing games; providing games, namely, online electronic games; electronic game services provided by means of the internet; electronic games services; electronic games services provided by means of a global communication networkClass 041 for Entertainment services, namely, provision of on-line computer games; entertainment services, namely, providing on-line interactive computer games; entertainment services, namely, providing a website featuring information for matching users with computer games; electronic games services, namely, provision of computer games on-line or by means of a global computer network; providing interactive multi-player computer games via the internet and electronic communication networks; providing online video game entertainment services; rental of video games; providing a website featuring non-downloadable internet games; on-line gaming services; providing online computer game services; providing games, namely, online electronic games; electronic game services provided by means of the internet
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018275401 filed 07/21/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018275401 registered 11/03/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU3-38111352-155030323_. _S00.Prime_Matter_certifi ed_copy_of_registration_E UIPO_201120.pdf
Converted PDF file(s) ( 10 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7Foreign Registration-8Foreign Registration-9Foreign Registration-10

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Upon acceptance of Applicant's § 44(e) filing basis based on the foreign registration certificate submitted with the present Response, Applicant requests that its § 1(b) intent-to-use filing basis be deleted from the application.

Correspondence Information (current):
      DOUGLAS R. WOLF
      PRIMARY EMAIL FOR CORRESPONDENCE: drwtrademarks@wolfgreenfield.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is K06162001600.
Correspondence Information (proposed):
      Douglas R. Wolf
      PRIMARY EMAIL FOR CORRESPONDENCE: drwtrademarks@wolfgreenfield.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is K06162001600.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /drw/     Date: 11/23/2020
Signatory's Name: Douglas R. Wolf
Signatory's Position: Attorney of Record

Signatory's Phone Number: 67-646-8000

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    DOUGLAS R. WOLF
   WOLF, GREENFIELD & SACKS, P.C.
   
   600 ATLANTIC AVENUE
   BOSTON, Massachusetts 02210
Mailing Address:    Douglas R. Wolf
   WOLF, GREENFIELD & SACKS, P.C.
   600 ATLANTIC AVENUE
   BOSTON, Massachusetts 02210
        
Serial Number: 90067340
Internet Transmission Date: Mon Nov 23 17:06:46 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-202011231706466703
68-90067340-7502fb5a183ac8a8379fb6be857e
9e9aaae53e9bf97c2f26309e2bca4bb5e7-N/A-N
/A-20201123155030323856


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